9.04.4 Examples.
1. Case Patent (P)1: Working in her chemistry laboratory, faculty member A develops a synthesis protocol for a novel compound that has potential for industrial applications. A patent literature search reveals no competing patent and the University invests $16,000 in the process of gaining a patent. Faculty member A is the inventor [9.04.1.3] and the University assumes ownership of the patent [9.04.2.1] and [9.04.2.4] Company Z negotiates with the University for an exclusive license for use of this patented protocol. This agreement includes (a) an understanding that Company Z will make reasonable efforts to develop a marketable product based in part on the patent, and (b) for use of the license the Company will pay the University $5,000 annually or 3% of the net profit from product sales, whichever is greater.
• Year 1 after licensure Company Z has not produced a marketable product, but the $5,000 fee is paid to the University. The income funds are retained by the University. [9.04.2.6]
• In Year 2 Company Z has marketed a product and makes royalty payments of $25,000 to the University. The University retains $11,000 to recoup the initial expense of filing the patent. The remaining $14,000 is distributed to Faculty Member A. [9.04.2.6 and 9.04.2.6.a]
• Company Z pays the University $70,000 royalty in Year 3. Faculty member A receives $36,000. The remaining $34,000 is
distributed 40% to Faculty A, 40% to the University, and 20% to the faculty member's department. [9.04.2.6.b(i-iii)]
2. Case P3: Faculty Member C, a molecular biologist, isolates and characterizes a gene promoter DNA sequence from crop Z. Faculty C reveals her work and seeks to have the University apply for patent protection on the promoter DNA sequence and its applications she has demonstrated in her laboratory. After evaluation of the "invention" and the probability of monetary returns that might result, the University determines not to seek patent protection. The faculty member is not happy with this decision and insists that there would be good value in a patent. She requests a release acknowledging she can pursue a patent as the owner and inventor. The University provides, in writing, the requested release of ownership, including a statement holding the University harmless in the case of any deleterious applications of this DNA [9.04.2.4] The faculty member pays the filing cost of the patent process. The University has no future claim to proceeds that may be derived from the patent.
3. Case P4: Faculty member D makes an invention while working under the terms of a federal research grant. The University assumes ownership of the related patent. [9.04.2.2.a and 9.04.2.4]
4. Case P5: Faculty member E is an acknowledged expert in cancer therapy. Working at her desk at home on Saturday, she designs a chemical compound that may fight non-Hodgkin’s Lymphoma. The University assumes ownership of the related patent. [9.04.2.2.a and 9.04.2.4]
5. Case P6: Staff member F is employed by the University to fabricate medical devices. Working in his garage on Saturday, F invents a unique spray head that has potential applications for efficient pesticide applications. The University may not assume ownership of the related patent, and the Staff member F is free to seek a patent on his own. [9.04.2.2.a and 9.04.2.4]
6. Case P7: G is a researcher spending a year-long leave at the University. G is not an employee of the University but is assigned a laboratory at the University and is provided access to University research equipment. Working in a University laboratory, G invents a device for detection of extremely small airborne quantities of a toxic chemical. The University will have ownership of the related patent. [9.04.2.1, 9.04.2.2.b and 9.04.2.4] Note that prior to beginning his leave at University, G should have acknowledged in writing his awareness of the University’s Patent Policy. [9.04.2.4]
7. Case P8: As a result of a class assignment, Student H invents a novel method of manufacturing a fire retardant compound. The University’s review of H's obligatory disclosure determines that H did not make significant use of University resources in making the invention. The University may not assume ownership of the related patent. [9.04.2.2.b]
8. Case P9: Working on her dissertation in her adviser's laboratory and with regular mentoring of her advisor, Student I invents a novel method for the manufacture of a pharmaceutical agent. Review of I's obligatory disclosure determines that I did make significant use of University resources in making the invention. The student and the advisor are both listed as inventors, given the significant input provided by the advisor. The University assumes ownership of the related patent [9.04.1.3 and 9.04.2.2.a-b]
9. Case P10: Faculty member J makes an invention in collaboration with a colleague at another University. By application of its own patent policy, the employer of J's collaborator has an ownership right in the resulting patent because of the collaborator's inventive contribution. Similarly, the University has an ownership right in the resulting patent as a result of J's inventive contribution. The University and the employer of J's collaborator enter an inter-institutional agreement specifying that the joint ownership rights shall be licensed together and that any earnings from such a joint license will be divided equally. In the event the University is designated in the inter-institutional agreement as the manager of the jointly owned patent, it would receive earnings attributable to both parties. After out-of-pocket expenses are recovered, the University would disburse to its partner University its share of earnings, with the retained remainder treated as distributable income under this policy. [9.04.2.6]
• Year 1 after licensure Company Z has not produced a marketable product, but the $5,000 fee is paid to the University. The income funds are retained by the University. [9.04.2.6]
• In Year 2 Company Z has marketed a product and makes royalty payments of $25,000 to the University. The University retains $11,000 to recoup the initial expense of filing the patent. The remaining $14,000 is distributed to Faculty Member A. [9.04.2.6 and 9.04.2.6.a]
• Company Z pays the University $70,000 royalty in Year 3. Faculty member A receives $36,000. The remaining $34,000 is
distributed 40% to Faculty A, 40% to the University, and 20% to the faculty member's department. [9.04.2.6.b(i-iii)]
2. Case P3: Faculty Member C, a molecular biologist, isolates and characterizes a gene promoter DNA sequence from crop Z. Faculty C reveals her work and seeks to have the University apply for patent protection on the promoter DNA sequence and its applications she has demonstrated in her laboratory. After evaluation of the "invention" and the probability of monetary returns that might result, the University determines not to seek patent protection. The faculty member is not happy with this decision and insists that there would be good value in a patent. She requests a release acknowledging she can pursue a patent as the owner and inventor. The University provides, in writing, the requested release of ownership, including a statement holding the University harmless in the case of any deleterious applications of this DNA [9.04.2.4] The faculty member pays the filing cost of the patent process. The University has no future claim to proceeds that may be derived from the patent.
3. Case P4: Faculty member D makes an invention while working under the terms of a federal research grant. The University assumes ownership of the related patent. [9.04.2.2.a and 9.04.2.4]
4. Case P5: Faculty member E is an acknowledged expert in cancer therapy. Working at her desk at home on Saturday, she designs a chemical compound that may fight non-Hodgkin’s Lymphoma. The University assumes ownership of the related patent. [9.04.2.2.a and 9.04.2.4]
5. Case P6: Staff member F is employed by the University to fabricate medical devices. Working in his garage on Saturday, F invents a unique spray head that has potential applications for efficient pesticide applications. The University may not assume ownership of the related patent, and the Staff member F is free to seek a patent on his own. [9.04.2.2.a and 9.04.2.4]
6. Case P7: G is a researcher spending a year-long leave at the University. G is not an employee of the University but is assigned a laboratory at the University and is provided access to University research equipment. Working in a University laboratory, G invents a device for detection of extremely small airborne quantities of a toxic chemical. The University will have ownership of the related patent. [9.04.2.1, 9.04.2.2.b and 9.04.2.4] Note that prior to beginning his leave at University, G should have acknowledged in writing his awareness of the University’s Patent Policy. [9.04.2.4]
7. Case P8: As a result of a class assignment, Student H invents a novel method of manufacturing a fire retardant compound. The University’s review of H's obligatory disclosure determines that H did not make significant use of University resources in making the invention. The University may not assume ownership of the related patent. [9.04.2.2.b]
8. Case P9: Working on her dissertation in her adviser's laboratory and with regular mentoring of her advisor, Student I invents a novel method for the manufacture of a pharmaceutical agent. Review of I's obligatory disclosure determines that I did make significant use of University resources in making the invention. The student and the advisor are both listed as inventors, given the significant input provided by the advisor. The University assumes ownership of the related patent [9.04.1.3 and 9.04.2.2.a-b]
9. Case P10: Faculty member J makes an invention in collaboration with a colleague at another University. By application of its own patent policy, the employer of J's collaborator has an ownership right in the resulting patent because of the collaborator's inventive contribution. Similarly, the University has an ownership right in the resulting patent as a result of J's inventive contribution. The University and the employer of J's collaborator enter an inter-institutional agreement specifying that the joint ownership rights shall be licensed together and that any earnings from such a joint license will be divided equally. In the event the University is designated in the inter-institutional agreement as the manager of the jointly owned patent, it would receive earnings attributable to both parties. After out-of-pocket expenses are recovered, the University would disburse to its partner University its share of earnings, with the retained remainder treated as distributable income under this policy. [9.04.2.6]
Effective Date
Approved by Board of Curators: January 15, 2026